Levi Woodbury

“ Under such an understanding of the law, letters-patent will be regarded by the public as mere charters of iniquity, and the whole system must be swept away. It must be as impracticable to sustain such an institution in the United States as it would be to establish the Inquisition here, or vest in the government those odious prerogatives the abuse of which led to the English statute of monopolies. ”

“ The patent act contemplates, that every thing to be done by an inventor, with respect to his specification and drawings, is to be done before the patent issues. There is no such thing as correcting the record of a specification or drawing by mere substitution of some other specification or drawing. After the patent issues, the patentee cannot, by merely depositing a new drawing, on any plea whatever, make it a part of his patent, or any evidence whatever of his invention, as originally patented, so as to cover cases of alleged infringement prior to such change in the record. ”

“ It is a claim, as broad and distinct as language can make it, for the spiral propelling-wheel, and every part of it, and for liberty to vary it in form as the inventor pleases, as long as a similar result-to wit, the propulsion of vessels-is produced by similar means,-to wit, by a spiral wheel. ”

“ It is the description of the improvement patented contained in the schedule, which is the specification that forms a part of the patent. It is in this view that the language of the court is to be applied, when they say that the specification is a part of the patent, and that the whole is to be taken together, and construed as one instrument. As a general thing, under the law of 1793, the schedule contained only such a specification; in contemplation of law it never can contain any other; if it contains any thing more, the excess in surplusage. ”

“ Plaintiffs' counsel do not allege, therefore, that this patent is too broad upon its face. It is as broad upon its face as the law will allow. It is broad enough to cover an improved steam-engine, and no more broad. It is made void by attempting to include more in the specification than is included in the grant, and more in the claim than is shown to be of the patentee's invention. The objection of plaintiffs' counsel is, that the claim is broader than the invention. ”

“ The true rule of construction in respect to patents and specifications, and the doings generally of inventors, is to apply to them plain and ordinary principles, as we have endeavoured to on this occasion, and not, in this most metaphysical branch of modern law, to yield to subtilties and technicalities, unsuited to the subject and not in keeping with the liberal spirit of the age, and likely to prove ruinous to a class of the community so inconsiderate and unskilled in business as men of genius and inventors usually are. ”

“ Hall, and it may be said that no cases on record present more masterly expositions of the principles of patent law which they discuss. Wyeth v. Stone stands on the extreme verge of sound principle; but there the two instruments were in fact but part of one and the same machine. The instruments contemplated in that case formed a compound machine for cutting ice. They were, in fact, but parts of one and the same instrument. Two things cannot be readily imagined more absolutely distinct and separate instruments, than a steam-engine and a paddle-wheel. ”

“ Now it is manifest that the invention is a mechanical unity. The improved engine and paddle-wheel are intended to act together, and if a capstan be used, the improved engine is made to connect with and turn the capstan, as it does the paddle-wheels. Although the engine may be applied to the old-fashioned wheel, and though it may or may not be attached to the capstan, yet it is manifest that the improved engine connected with the paddle-wheel, or with a capstan, may be used in connection to produce or aid the result designed by the patentee, viz. the propulsion or navigation of a vessel. ”

“ If the principle contended for be sound, then the patentee has no remedy for wilful and deliberate violations of his patent committed intermediate the destruction of the records of the patent-office and the complete restoration of them, no matter how public and notorious the patent may have become, and no matter how extensively the patent may have been published and circulated in works of art or otherwise. ”

“ What I claim as my invention, and for which I ask a patent, is the substituting for the crank in the reciprocating engine a grooved cylinder, operating in the manner hereinbefore described, by means of its connection with the piston-rod, together with all the variations of which this principle is susceptible; as, for example, a bar of metal may be bent in the form of a groove, and attached to the revolving shaft, and friction-wheels on the piston-rod may embrace this on each side, producing an effect similar to that produced by the groove. ”

“ Such a patent shifts its grounds at every trial, changes its color according to the aspect in which it it presented or met, and adapts itself with a fatal elasticity to the length and breadth of the evidence which happens to be applied to it. ”

“ There seems to have been no good reason at first, unless it be a fiscal one on the part of the government when issuing patents, why more than one in favor of the same inventor should not be embraced in one instrument, like more than one tract of land in one deed, or patent for land. ”

“ A steam-engine is employed to give motion to every manner of machinery. A paddle-wheel may be turned by horse-power, or man-power, or windmill-power, as well as by a steam-engine. Here the engine is the motive power; the wheel is the thing moved. The engine might be well employed to move any thing else; the wheel might well be put in action by any other motive power. They are as distinct and separate as cause and effect, and cannot be united in one patent, except upon principles that would entirely nullify the rule of law laid down in Evans v. Eaton and Barrett v. ”

“ There can be only one motive of desiring to add a new drawing, and that is, to remedy a defect or insufficiency in the original drawing or specification, or to correct the same. The object of such a change can never be merely to present a more tasteful drawing, or a drawing more agreeable to the eye, or more in conformity to pictorial rules. Other arts than the fine arts induce such an application. The offer to file a new drawing is an admission on the part of the patentee, that his new drawing covers something in which the original drawing is defective or insufficient. ”

“ Emerson arms himself, and goes out among men, as Lord Kenyon expressed himself in a similar case, 'hanging terrors over the unlearned,' when we come to examine the specification of his wheel, we find an implied acknowledgment that it is only an improvement, and merely an implied acknowledgment. He speaks of an 'improved spiral paddle-wheel,' leaving the unavoidable inference, that he has improved the ordinary paddle-wheel by making it spiral, and that the spiral feature-or, as he subsequently describes it, his spiral trough-is the only material part of his improvement. ”

“ The question is now, for the first time, distinctly presented to this tribunal, and the doctrine on this subject is to be settled by the judgment of the court in this case. It is a question of no inconsiderable public importance, and it is desirable that it should be adjudicated on plain and substantial grounds. All inventions are supposed to conduce more or less to one common object, to wit, the benefit of the public. This common purpose is probably too remote to sustain the introduction of all manner of inventions into the same patent ”

“ Foreseeing that some time must necessarily elapse before patentees could be informed of their rights and duties, and prepare copies of their patents and drawings and models, Congress has provided, in this section, that, from the 15th of December, 1836, when the patent-office was burned, to the 1st day of June, 1837, and not after, patentees and others may give in evidence their patents in any court, notwithstanding that they have not been re-recorded, and no verified drawing of the invention has been filed in the patent-office. ”

“ In the present instance, yielding to the force of such reasons in favor of a due and rational degree of certainty in describing any improvements claimed as new, there still seems to us, though without the aid of experts and machinists, no difficulty in ascertaining, from the language used here, the new movement intended to be given to the steam-engine, by substituting a continued rotary motion for a crank motion, and the new form of the spiral wheel, when the engine is used in vessels, by changing the form of the paddles and placing them near the ends of the arms ”

“ The inventor is required to present his petition soliciting the patent, and to make oath that he is the inventor. The statute further requires that the letters-patent shall recite the allegations and suggestions of the petition, and give a short description of the invention. ”

“ When the piston is down, this friction-roller will stand in the V formed by the junction of the grooves on the opposite sides, and as it is raised, it will in its passage to the upper junction give half a revolution to the solid cylinder, and in descending will complete the revolution by the action of the friction-roller on the other portion of the groove.
When two cylinders are used, they are to be placed parallel to each other, and at such a distance apart that the pistons of each may, in like manner, act upon the solid cylinder; the piston of one being up when the other is down. ”

“ Most of the authorities cited by the counsel for the plaintiffs in error, under his fourth point, are referred to by Phillips, in his work on Patents, and the rule that he deduces from them is thus stated, at page 269:--
'In specifying an improvement in a machine, it is often necessary to describe the whole machine as it operates with the improvement, in order to make the description intelligible, and enable an artist to construct the machine, as the inventor is bound to do in his description, and which if he fails to do, he falls into the fault of obscurity ”

“ Justice Marshall's very sound and pregnant suggestion is destroyed the moment the converse of the proposition is established, namely, that when machines are capable of being used in combination, then any number of them may be united in the same patent. ”

“ But it may be said, that, inasmuch as the patentee has described a paddle-wheel, and also an improved method of causing a capstan to revolve upon the deck of a vessel, as well as his improvement in the steam-engine, and claimed these, as well as his steam-engine, in his schedule annexed to the letters-patent, the grant must be construed to cover the paddle-wheel and the capstan, as well as the steam-engine, though it be in express terms for the steam-engine only, though it was for that alone that he solicited a patent, and it was that alone that he made oath he had invented. ”

“ The United States of America, to all to whom these letters-patent shall come:
Whereas John B. Emerson, a citizen of the United States, hath alleged that he has invented a new and useful improvement in the steam-engine, which improvement he states has not been known or used before his application; hath made oath that he doth verily believe that he is the true inventor or discoverer of the said improvement ”

“ No weight is claimed for them beyond that which they derive from their intrinsic good sense and sound reason. Their authority, as well-considered decisions, has never been judicially disturbed or questioned. But there is a case of controlling authority,-that of Evans v. Eaton,-sustaining the doctrine for which we contend to its full extent. To this case I shall have occasion again to refer, in considering the fourth head of the argument of the learned counsel for the defendant, to which I now pass. ”

“ Emerson's specification does not define with precision the nature and extent of the alleged improvement in the spiral paddle-wheel, but describes the whole machine, and claims the whole as improved, without distinguishing the new from the old. A patent with such a specification cannot be supported. ”

“ The ground for the restriction claimed is, that the community have no means of ascertaining, but by a resort to the records of the patent-office, whether the construction of a particular machine or instrument would be a violation of the rights of others, and the infringement might be innocently committed. ”

“ THIS case was brought up, by writ of error, from the Circuit Court of the United States for the Southern District of New York. It was a suit for the violation of a patent-right, and the writ of error was allowed under the seventeenth section of the act of 1836. ”

“ The verdict of the jury was, that the said Peter Hogg and Cornelius Delamater, the defendants, are guilty of the premises within laid to their charge, in manner and form as the said John B. Emerson hath within complained against them, and they assess the damages of the said plaintiff, on occasion thereof, over and above his costs and charges by him about this suit in this behalf expended, at one thousand five hundred dollars, and for those costs and charges at six cents. ”

“ This leads to the principle in the law of patents involved in the fourth point. It is the positive requisition of the statute, and has been repeatedly considered and passed upon by the federal judicial tribunals. ”